In its Answer, Nike asks for a declaration that Nike is the sole owner of copyrights in the modified “KL2” logo, a finding that Kawhi’s use of the modified “KL2” logo infringes the copyrights owned by Nike, cancellation of Kawhi’s copyright registration to the modified “KL2” logo due to fraud in his copyright application, and a finding that Kawhi breached the “Men’s Pro Basketball Contract” he entered into with Nike on October 26, 2011.…

On Monday, May 3, 2019, in the midst of the NBA finals, Kawhi Leonard of the Toronto Raptors filed a lawsuit against Nike, Inc. (Nike) in the US District Court Southern District of California. The complaint asks the Court for a declaration that Kawhi is the sole author of the “KL2” logo, that his use of that logo does not infringe the rights of Nike, and that Nike committed fraud in its copyright application. The “KL2” logo is sometimes referred to as the “Klaw” logo which is a nickname for Kawhi. Kawhi owns US trademark registration number 5608427 for the “KL2” logo for use with apparel. However, Nike owns US copyright registration number VA0002097900 for the “KL2” logo.

The United States Patent and Trademark Office (USPTO) offers valuable IP-related business resources through an intellectual property (IP) attaché program. The program is structured to generally improve IP policies, laws and regulations abroad for the benefit of U.S. businesses and stakeholders, while providing country-specific IP-related materials and services to teach and inform. However, the program also makes representatives available who can act as points of contact for U.S. businesses to guide actions and to provide interactions with foreign governmental entities to addresses country-specific IP-related legal issues.…

On July 1, 2018, the United States Patent and Trademark Office (USPTO) began a 3-year pilot program known as The PCT Collaborative Search and Examination Pilot (CS&E) Program, to streamline examination and search procedures for patent examiners in multiple countries. The program is a coordinated effort with patent offices from around the world, together known as the IP5 offices. Specifically, participating International Search Authority (ISA) members include the USPTO, European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and State Intellectual Property Office of the People’s Republic of China (SIPO). This program is a continuation of two previous programs launched in 2010 and 2011, respectively, involving the USPTO, EPO and KIPO that laid the groundwork for this expanded program aimed at testing user interest, operational and quality standards, and the electronic platform.

Currently, upon filing a PCT application, applicants designate one of the IP5 offices to provide an international search report (ISR) and written opinion. However, upon reaching the national stage as applicants pursue applications in individual countries, applicants can be presented with country-specific search reports involving entirely new art depending on varying search criteria. This can place a burden on applicants and hinder cohesive world-wide prosecution strategies. The CS&E program addresses this issue by coordinating searches from each office, thereby providing a higher quality work product which is more likely to comprehensively identify and consider world-wide art. The CS&E program provides the advantages of having the searching performed by multiple examiners with different language capabilities …

On Monday, June 19, 2017, the Supreme Court released a decision in a high profile trademark case rejecting the Lanham Act’s rule against disparaging trademarks as being facially invalid and unconstitutional.

The Lanham Act, since its enactment in 1946, has contained a provision stating that a trademark should not be refused registration on the principal register unless it “consists of … matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” (See 15 U.S.C. §1052). Since the enactment of the Lanham Act, courts have routinely found that the disparagement rule does not violate the First Amendment because it does not preclude actual use of the mark in commerce nor prevent the establishment of common law trademark rights, but is rather just a bar to federal registration.…

Nearly 50 miles south of San Diego in Mexico lies an eleven room hotel which is currently making waves for its name, Hotel California, which is also the name of the Eagles classic single and album. The boutique hotel was originally named Hotel California at its 1950 opening but has since undergone several name changes. Ultimately the original name, Hotel California, was revived sometime after a Canadian couple bought it in 2001.

Although the Baja hotel has been around for over 60 years many of us are more familiar with Hotel California being associated with one of America’s greatest rock bands, the Eagles. Both the song and album, “Hotel California,” have arguably become legendary. The album won the 1977 Grammy Award for record of the year and is one of the best-selling albums of all time.…

It’s the month of March, and most of us are highly aware of the NCAA’s basketball tournament that dramatically decreases work productivity and determines the college basketball national champion. If you’re thinking about entering the hype and using any of the NCAA’s trademarks in your promotions and marketing this month, it’s important to consider your use very carefully. The reason: the NCAA has trademarked a slew of marks associated with the tournament, such as “NCAA,” March Madness,” “Final Four,” the “Big Dance” and any corresponding logos. These marks are all federally registered trademarks of the NCAA, and the NCAA zealously defends them.

The NCAA has been using the mark MARCH MADNESS for over three decades and has recently attempted to claim further rights in the term “March”, quite possibly with respect to any services rendered in conjunction with sports-related entertainment services. This is how it happened. A little over a year ago, the Big Ten Conference filed a federal trademark application based on an intent to use the mark “MARCH IS ON!” for services related to sporting events and contests. The application was reviewed by a United States Patent and Trademark Office (USPTO) examiner, who ultimately determined that there were no conflicting marks that would bar registration of this mark and the application was published for opposition in August of 2016. The NCAA did not respond kindly to this application and after exhausting several extensions of time to oppose formally filed an opposition on Feb. 13, 2017.…

The new gTLD program, considered to be one of the most important Internet developments in recent years, continues to gain momentum since ICANN delegated its first new gTLD back in October 2013. ICANN has delegated more than 600 new gTLDs to date. Of those delegated strings, 365 are open to the general public. A little more than 1 million new domains had been purchased at this time last year; now, that number is nearing the 6 million mark. And don’t expect things to slow down. New gTLDs continue to roll out in quick succession, spurring about 20,000 new domain purchases every day.

What’s selling?

During the past several months, the leaderboards have seen a great deal of movement, with each new gTLD jockeying for the top spot as they become available to the public. Though some have remained dominant, such as .xyz and .club, more recently released gTLDs including .网址 (URL or internet site) and .science have made huge strides.

Cuba is a first-to-file country for trademark protection; in other words, a registration is awarded to the first applicant, even if that applicant has no legitimate claim to the trademark. Currently, an exception to the embargo permits U.S. companies to obtain trademark registrations — as well as submit patent applications — in Cuba. Proactively seeking a trademark registration in Cuba may avoid problems when the embargo is lifted.

An applicant can apply for a Cuban trademark registration using the international Madrid Protocol mechanism if it has an existing U.S. registration. A Cuban trademark application is screened against existing registrations by the Oficina Cubana de la Propiedad Industrial (OCPI). If a registration exists for the mark of the application, the OCPI will reject the application.

Generally, if your brand is well-known in the U.S., it is more likely that a trademark squatter might register your mark in Cuba to demand payment from you in exchange for the trademark. It is more expensive for trademark owners to obtain rights from others rather than to seek early trademark registration in first-to-file countries.

In February 2015, I wrote a comment about Katy Perry’s ineffective attempt to assert copyright to stop a 3D printer from selling figurines similar to a shark costume used in her Super Bowl XLIX halftime show. In an attempt to establish rights in various expressions of that shark, Perry (Killer Queen, LLC) filed U.S. trademark applications for BASKING SHARK, DRUNK SHARK, RIGHT SHARK, LEFT SHARK and for three applications that depict designs of a shark. Each of the applications recite the goods to be used with the trademarks as cell phone covers, stickers, mugs, T-shirts, sweatshirts, hats, plush toys, action figures, certain costumes, certain figurines, and live musical and dance performances. Those applications have now been examined by the U.S. Trademark Office.

Trademarks, which provide protection for brands and other source identifiers, differ from copyrights, which cover original works of authorship. Although Perry did not come up with the term “Left Shark,” originality is not a requirement for rights in a trademark; however, other requirements may be of issue for her applications.

Perry’s word mark applications appear to be in line for allowance with some amendments, but two of the applications that cover a shark design — a front view of a standing shark and a side view of a standing shark— have been refused because the Trademark Examiner determined that the designs are of a character and do not function as trademarks. (Note: The third application for a shark design used a photo of an actual 3D shark figurine …

If manufacturing or selling goods in China is part of your current or future business strategy, it is not too early to ensure protection of your intellectual property in China. On May 8, Porter Wright is holding half-day seminar titled Strategies for protecting IP rights in China to discuss U.S. businesses’ experiences as they enter the Chinese market. During this in-person event taking place in Columbus, Ohio, business leaders have the rare opportunity to gain insights directly from Beijing-based IP attorneys. Skilled IP practitioners from the U.S. and China will discuss real-world scenarios and strategies about how businesses can ensure their intellectual property is protected. Topics are:

Obtaining patent protection and challenging patent
validity in China
Get an overview of the types of patent protection available in China, and how U.S. businesses can leverage these patents to protect their new technologies and products. If a Chinese business or other Chinese patent owner makes an accusation of patent infringement, also understand procedures that can be taken to invalidate a Chinese patent.
Speaker: Gary Wu, Kangxin Partners

Preventing unauthorized importation of your products
from China
Sometimes, regardless of efforts to protect your company’s IP, it happens: A rogue manufacturer or other party copies the product you are manufacturing in China and starts selling it in the U.S. (and elsewhere). Learn what steps you can take to minimize risk, pursue legal options, decommission unlawful operations and maintain the value of your intellectual property.
Speaker: Jim Liles, Porter Wright

In trademark infringement litigation, the critical and usually pivotal issue is whether there is a likelihood of confusion between two allegedly similar marks. Eliminating a defendant’s ability to defend against an allegation of likelihood of confusion can be tantamount to establishing liability against the defendant. Yet, that will be the situation for many defendants following the U.S. Supreme Court’s March 24, 2015 decision in B& B Hardware, Inc. v. Hargis Industries, Inc. In that case, the Supreme Court held a defendant can be precluded from contesting “likelihood of confusion” if that issue, or a non-materially different issue, was previously decided between the parties in the Trademark Trial and Appeal Board (TTAB), a tribunal in the U.S Patent and Trademark Office (USPTO).

At first blush, the decision might not appear unusual. The doctrine of “issue preclusion,” a doctrine that prevents a party from relitigating an issue previously decided between parties, is long established law. TTAB decisions, however, are different for several reasons. First, the TTAB is part of an administrative agency (the USPTO), not part of the judicial system. Second, TTAB decisions are based on “the mark as shown in the application [for trademark registration] and as used on the good described in the application,” not the mark as actually used in the marketplace. Third, and perhaps far more significant in practical terms, many trademark registration proceedings in the past have been conducted under the assumption that the stakes involved in the proceeding were relatively modest. TTAB proceeds were viewed as …

ICANN has made it possible to serve up every brand owner’s worst nightmare; welcome to [yourbrand].sucks. ICANN and registries of new gTLDs have painted a rosy picture of the new Internet landscape, advocating that the introduction of new top level domains, like .app and .restaurant is a way to increase choice and competition. Unfortunately, the introduction of the new gTLDs has created a harsh reality for brand owners who are forced to decide how far they are willing to go to protect their valuable brands through the preemptive purchase of domain names with otherwise undesirable gTLDs.

Would-be gTLD domain registries were required to pay at least $175,000 to obtain the right to offer domain names with a new gTLD of their choice, so it was understood that the cost to domain registrants for a second level domain wouldn’t necessarily be cheap. Plus, the registrars need to mark the prices up to account for integration, registration and the continued maintenance of the domains. When brand owners find themselves paying top dollar for second level domain names only for the purpose of preventing someone from disparaging their brand, exorbitant registration costs may feel like blackmail.…

The Internet was in a tizzy back in 2011 when ICM Registry began selling .xxx domain names for use by adult entertainment providers, selling nearly 250,000 addresses and netting more than $50 million. Just last year the registry sold sex.xxx for $3 million dollars, the highest price paid for a non-dot-com address. Which leads us to wonder if the addition of .adult and .porn will generate the same concerns and profits. ICM Registry has set aside nearly 1,000 domain names such as sex.porn, hoping to replicate the success they had with .xxx. But the concern for many trademark holders, as was the case with .xxx, is how to protect their brands during the launch of .adult and .porn?

ICM Registry has set up an elaborate registration period, in effect now through the launch to the general public, which is expected in early June. The two gTLDs opened their Sunrise periods March 2, which will give trademark holders who are registered in the Trademark Clearinghouse (TMCH) the opportunity to secure their registered trademark within the new top level domains. Domains names are available on a first-come, first-served basis to validated marks in the TMCH. The cost of registration fees will be the standard registration fees without any additional sunrise application fees.

Once the Sunrise period has closed, .adult and .porn will launch a Sunrise B period from April 6 to April 30 for .xxx Sunrise B applicants. Sunrise B applicants consist of trademark owners who participated in the .xxx Sunrise B …

The U.S. Supreme Court created some wake by issuing their first substantive trademark ruling in more than a decade this week. The Supreme Court decided to hear a case on appeal from the Ninth Circuit’s decision in Hana Fin., Inc. v. Hana Bank, 735 F.3d 1158 (9th Cir. 2013) cert granted, 134 S. Ct. 2842 (2014).

Of significant importance to the case is the trademark doctrine of tacking, which allows a trademark owner to make slight modifications of a trademark over time while maintaining the original first-use priority date. The doctrine holds that the original mark and the later, slightly altered, mark may be tacked when they are considered to be “legal equivalents” that “create the same, continuing commercial impression.” Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159 (Fed. Cir. 1991).

The issue addressed by the Supreme Court is whether a judge or a jury should determine whether tacking is available — that is, whether the original and revised marks are legal equivalents — in a given case.…

In late 2015 or early 2016, significant changes will occur in Canada under the Canadian Trade-Marks Act. Entities holding a Canadian trademark registration that has a renewal date close to this time period will face issues regarding the renewal term period and potential fee increases.

Under the current provisions of the Canadian Trade-Marks Act, registrations are valid for a period for 15 years. The Canadian Trademark Office has indicated that registrations having a renewal date before the change will renew for a period of 15 years. Registrations with a renewal date after the change will have 10-year terms. In that the exact date of the change is not yet known, any Canadian trademark registration having a renewal date from about September 2015 to about April 2016 could have either a 15-year or 10-year renewal period, depending on when the change is enacted.…

Early in December 2014, the U.S. Supreme Court heard oral arguments in B&B Hardware, Inc. v. Hargis Industries, Inc. At issue are inconsistencies by the 12 regional federal courts appeal in giving preclusive effect in trademark infringement cases to a denial by the Trademark Trial and Appeal Board (TTAB) of an application to register a trademark in an opposition action. Issue preclusion prevents a party to a lawsuit from re-litigating an issue once it has been decided in a previous case where the party was given a full and fair opportunity to litigate the issue. The issue here is “likelihood of confusion.”

B&B owns a U.S. registration for the trademark SEALTIGHT. When Hargis applied to register SEALTITE, B&B opposed the registration. The TTAB held for B&B. B&B then sued Hargis in district court, alleging trademark infringement. The district court found that the TTAB’s ruling for B&B did not have preclusive effect on the district court case. B&B appealed to the Eighth Circuit. The Eight Circuit held that the TTAB and the district court used different tests to reach their findings of a likelihood of confusion, so refused to apply issue preclusion. B&B appealed to the Supreme Court.…

Back in the 1960’s, legendary bluesman Muddy Waters wrote a song called “You Can’t Lose What You Ain’t Never Had.”

Now, it is Sony Pictures that is singing the blues, as damages continue to mount following the cyber attack on its data networks just before Thanksgiving. A shadowy group with possible connections to the North Korean government has claimed responsibility for the hack, which, to date, has resulted in exposure of Sony intellectual property (e.g., movie scripts), trade secrets (e.g., film budgets), employee personal information (e.g., employee and former employee home addresses and social security numbers) and other sensitive information (e.g., actor travel aliases and phone numbers).

I’m no cybersecurity expert, but I’m at the point where I seriously doubt any currently available data security technology is totally hack-proof. Who knows, there may have been precious little that Sony could have done to prevent the loss of its intellectual property and trade secret information to determined hackers. Let’s face it, some of the most highly sophisticated corporations and government agencies have been victimized by cyber attacks in the last year. But the same really can’t be said for their employee data.…

The Internet Corporation for Assigned Numbers and Names continues to be sluggish in delegating new gTLDs this month, delegating no new gTLDs since our last post. But ICANN has made a dent this year in the 1,930 gTLD applications submitted, delegating 432 new gTLDs to date. Of those 1,930 applications, 1,157 are proceeding through the new gTLD program and 341 have been withdrawn.

Are new gTLDs selling?

More than 3 million second-level domains have been purchased in new TLDs, but of those 3 million, nearly two-thirds are parked domains, i.e., registered internet domain names which are not associated with any services. A total of 62,666 new second-level domain registrations were purchased within the last week, at an average of nearly 9,000 a day.

ICANN has given 34 gTLDs the green light to launch since our last gTLD update. Only 14 new gTLDs were launched in the month of October, and only 21 were delegated in total for the month of September. These numbers are strikingly low compared with the rapid-fire delegation the Internet community witnessed through the summer. The following list represents the small batch of gTLDs that have been delegated by ICANN since Sept. 15, 2014:

.sydney

.bloomberg

.energy

.delivery

.taipei

.emerck

.band

.yoga

.crs

.abogado

.rip

.wedding

.poker

.alspace

.allfinanz

.ibm

.forsale

.vermögensberatung (financial advice)

.vermögensberater (financial advisor)

.pyc (Russian)

.tui

.dvag

.pohl

.work

.casa

.budapest

.world

.fly

.nexus

.channel

.prof

.gle

.zip

.cal

.chrome

This sluggish behavior also is demonstrated with the small number of gTLDs currently entering or in the sunrise phase this month.

There’s exciting news in the world of cryptocurrency, the exchange medium that uses cryptography to secure the transactions and control the creation of new units. Bitcoin, created in 2009, was the first cryptocurrency and remains the most popular, though numerous other cryptocurrencies, such as Coinye, have emerged in the interim.

Where can you find cryptocurrency? Certainly not at your local bank.

Cryptocurrency is essentially digital money, a virtual medium of exchange that is not issued, backed, or tied to any particular nation or government. Cryptocurrency derives value through a variety of ways, such as buying either from exchanges, or directly from other people selling them, or try your hand at mining, which requires software you download to your computer.

After obtaining cryptocurrency, such as a bitcoin, the next hurdle is finding someone who will accept the currency in exchange for goods and services — which isn’t as difficult as you might think. Analysts estimate that over 65,000 bitcoin transactions occur every day through electronic transactions. What types of goods and services are exchanged, you may ask? Almost anything from the mundane products, such as electronics or dog apparel, to swanky cocktails or a Tesla, or to the illegal, including drugs and guns. Because purchases occur online through user’s virtual wallets, purchasers can remain anonymous and law enforcement can’t freeze their accounts.

ICANN continues to make big strides in widening the Internet playing field. To date, ICANN has invited 1,159 new gTLDs to contract, and of those 1,159 invited, 495 registry agreements have been signed. From the 495 applicants who have signed a registry agreement, ICANN has delegated 357 new gTLDs to the root zone including the newest 20 that have been delegated since our last post. The newly delegated gTLDs are:

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